Trademarks
Trademark registration
A trademark is a designation, which is intended to distinguish your products and services from similar goods or services of other producers.
Trademarks can be divided into the following main types: word marks, device marks, 3-dimensional marks, combined marks, sound marks.
State registration of the trademark (service mark) is carried out by the Federal Service for Intellectual Property (Rospatent). Trademark registration takes 12-14 months.
Main stages of trademark registration include:
- Trademark protectability search
- Trademark availability search (trademark search among registered trademarks and pending trademark applications)
- Preparing trademark application filing materials
- Optimal classification
- Record keeping (response to questions, correspondence with experts of Patent and Trademark Office)
- Trademark certificate issue
Trademark renewal
Exclusive right on trademark is valid within 10 years from the date of trademark application filing. To proceed with trademark registration renewal for next 10 years rightholder needs to file documents within the last year of trademark validity. Trademark validity term can be renewed for the next 10 years unlimited number of times.
During the period of trademark use the changes can take place (change of rightholder’s address, change of legal form of the company, changes in the trademark). This should be considered by trademark renewal.
Record of change in trademark registration certificate
Within the trademark validity term it is subject to record of change in its registration. Changes may relate to rightholder (change of legal address, change of the legal form of the company) as well as changes in the trademark itself (reducing the list of the registered goods and services, deletion or addition of minor changes in the trademark itself).
It should be noted that in accordance with applicable law any changes in the trademark should be registered in due course.
Timely record of changes allows trademark rightholder to avoid unforeseen difficulties which may arise during trademark assignment, trademark rights protection, trademark renewal.
Trademark assignment agreement
Under trademark assignment agreement rightholder (Assignor) transfers exclusive right on trademark to another person acquiring the right (Assignee).
Trademark assignment agreement shall be drafted in written form and registered on a mandatory basis at Rospatent.
Our specialists provide full range of services on drafting trademark assignment agreement, submitting documents for registration and related record keeping.
License agreement
It can be described as means to "order the exclusive right". Under this agreement the holder of exclusive right in intellectual property object (Licensor) provides or undertakes to provide the other party (Licensee) the right to use the mentioned IP object.
License agreement is drafted in written form and shall be subject to state registration at Rospatent.
Our specialists provide full range of services on drafting license agreement, submission of documents for registration of a license agreement at Rospatent; record keeping, providing responses to requests. We can also carry out a detailed analysis and editing of your license agreement draft.
Franchising agreement
Under the franchising agreement one party (Franchisor) undertakes to provide the other party (User) for reward, for a period or without specifying the period, the right to use in business a set of exclusive rights (on trademark, corporate identity style, computer program, trade name).
In accordance with Russian law such agreements are subject to mandatory registration at Rospatent.
Our specialists provide full range of services on drafting the franchise agreement in accordance with the applicable legislation, its registration at Rospatent.
International trademark registration
In accordance with Russian law trademark is protected only within the territory of the country in which it is registered. Therefore, if your company's field of activity is beyond the scope of the Russian market, there is a need to register the trademark abroad.
There are several options for trademark registration abroad:
- Madrid system (Madrid Agreement and Madrid Protocol) For international registration one trademark application is filed, prepared in one language, with payment of one international official fee and with specification of countries of applicant’s interest. The main advantages of trademark registration under Madrid system is filing one application and paying one international official fee, which significantly simplifies the registration process and minimizes registration costs. However, it is important to remember that the basic condition for filing trademark applications under Madrid system is presence of registered trademark or pending trademark application in Russia. Madrid trademark registration system is recommended to use when you are trademark rightholder in Russia (or applicant of trademark application in Russian and most likely this trademark will be registered) and if you plan trademark registration at least in several countries.
- National trademark registration in each country. It includes filing trademark application in each of the countries of your interest separately through a trademark attorney in the country. In this case registration terms and conditions are regulated by national Trademark Office of each country. This procedure is recommended to use if you are interested in trademark registration in 1, 2 countries or you do not have a registered trademark or pending trademark application in Russia.
Trademark watch (illegal use of trademark)
According to p. 1 of Article 1493 of the Civil Code of Russian Federation, following the publication of trademark application, prior decision of trademark registration issue, any person may submit the appeal in writing form to Federal Institution of Industrial Property containing the reasons of non-compliance of the filed mark to the requirements of Article 1477 and 1483 that set the grounds for trademark registration refusal.
This innovation in the law allows the trademark rightholder to suppress the actions of competitors on possible registration of trademark similar to your mark at the stage of application.
Our company offers the service of trademark watch, which includes the monitoring of pending applications on identical or similar trademarks in respect of similar goods and services submitted by third parties, preparing and submitting of objections against the legal protection grant for such applications.
Using this service trademark rightholder can avoid the risks related to the registration of similar trademarks in the name of third parties and the need to carry out further court proceedings on opposing such registrations and use similar trademarks use by third parties.